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United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark Office 

Address: COMMISSIONER FOR PATENTS 
P.O. Box 1450 

Alexandria, Virginia 22313-1450 
www.uspto.gov 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. 



CONFIRMATION NO. 



09/981,124 



10/17/2001 



7590 



12/29/2004 



John P. White, ESQ 

COOPER & DUNHAM LLP 

1 1 85 AVENUE OF THE AMERICAS 

NEW YORK, NY 10036 



Allan Green 



26-98A 



9503 



EXAMINER 



MCELWAIN, ELIZABETH F 



ART UNIT 



PAPER NUMBER 



1638 



DATE MAILED: 12/29/2004 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 10/03) 




UNITED STATES DEPARTMENT OF COMMERCE 
U.S. Patent and Trademark Office 

Address: COMMISSIONER FOR PATENTS 
P.O. Box 1450 

Alexandria, Virginia 22313-1450 



APPLICATION NOJ 


FILING DATE 


FIRST NAMED INVENTOR/ 


ATTORNEY DOCKET NO. 


CONTROL NO. 




PATENT IN REEXAMINATION 





EXAMINER 




20041214 



DATE MAILED: 



Please find below and/or attached an Office communication concerning this application or 
proceeding. 



Commissioner for Patents 



PTO-90C (Rev.04-03) 



* 



See the attached Notice of Non-Responsive Amendment. 



Elizabeth F. McElwain, Ph.D. 
Primary Examiner 
Art Unit: 1638 



PTO-90C (Rev.04-03) 



Application/Control Number: 09/98 1,124 Page 2 

Art Unit: 1638 

Response to Amendment 

1. The reply filed on October 18, 2004 is not fully responsive to the prior Office Action 
because of the following omission(s) or matter(s): Applicants have cancelled all of the original 
claims and submitted new claims, and stated that all of the newly submitted claims should be 
examined in the response filed June 21, 2004. However, applicants did not elect one of the 
groups set forth in the restriction requirement, and the claims submitted by Applicant are non- 
elected by original presentation in that they don't correspond to any of the groups set forth in 
the restriction requirement. In the present response, Applicants have still not elected one of 
the groups set forth in the restriction requirement. Instead, Applicants have argued that the 
newly submitted claims were filed "before an action" and therefore, should be treated as 
original claims. 

2. However, the issuance of the restriction requirement is an office action. Therefore, the 
claims filed June 21, 2004 were submitted after an office action had been sent. Applicants 
have inserted in brackets "[on the merits]" after the phrase "before an action", and have 
explained in a footnote that "the term 'action' is consistently used to refer to action on the 
merits", while restrictions are referred to as "restriction" or "requirement". The Examiner 
disagrees with this reasoning. A restriction requirement is issued as an office action and is 
accompanied by the PTO-326 Office Action Summary form. In addition, the section of the 
MPEP 818.02 referred to by Applicants, expressly states when "office action" means "office 
action on the merits". See the second paragraph of MPEP 818.02(a), where it states "claims 
originally presented and acted upon by the Office on their merits", while the preceding 
sentence recites that claims can be added and considered as original claims for purposes of 



Application/Control Number: 09/98 1,124 Page 3 

Art Unit: 1638 

restriction only "before an action is given". In this sentence, it does not specify that the 
"action" would have to be an "action on the merits", as is clearly stated in the following 
sentence. 

3. As stated in the previous Letter of Non-Responsive Amendment, Applicants must elect 
a group set forth in the restriction requirement and provide claims that correspond to that 
group. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, 
applicant is given ONE (1) MONTH or THIRTY (30) DAYS from the mailing date of this 
notice, whichever is longer, within which to supply the omission or correction in order to 
avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 
37 CFR 1.136(a). 

Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Elizabeth F. McElwain whose telephone number is (571) 272- 
0802. The examiner can normally be reached on increased flex time. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, Amy Nelson can be reached on (571) 272-0804. The fax phone number for the 
organization where this application or proceeding is assigned is 571-273-8300. 



Application/Control Number: 09/981,124 



Page 4 



Art Unit: 1638 

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applications may be obtained from either Private PAIR or Public PAIR. Status information for 
unpublished applications is available through Private PAIR only. For more information about 
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Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll- 
free). 




Elizabeth F. McElwain, Ph.D. 
Primary Examiner 



Art Unit 1638 



EFM